Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. John Wreaves / Wingage Ltd
Claim Number: FA1109001407142
Complainant is Reed Elsevier Inc. and Reed Elsevier Properties Inc. (“Complainant”), represented by Tara M. Vold of Fulbright & Jaworski L.L.P., Washington D.C., USA. Respondent is John Wreaves / Wingage Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <varietymagazines.com> and <varietymags.com>, registered with 123Reg/Webfusion.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2011; the National Arbitration Forum received payment on September 13, 2011.
On September 26, 2011, 123Reg/Webfusion confirmed by e-mail to the National Arbitration Forum that the <varietymagazines.com> and <varietymags.com> domain names are registered with 123Reg/Webfusion and that Respondent is the current registrant of the names. 123Reg/Webfusion has verified that Respondent is bound by the 123Reg/Webfusion registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@varietymagazines.com and postmaster@varietymags.com. Also on September 27, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <varietymagazines.com> and <varietymags.com> domain names are confusingly similar to Complainant’s VARIETY mark.
2. Respondent does not have any rights or legitimate interests in the <varietymagazines.com> and <varietymags.com> domain names.
3. Respondent registered and used the <varietymagazines.com> and <varietymags.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Reed Elsevier Inc. and Reed Elsevier Properties Inc., publishes magazines, newsletters, and online materials relating to the entertainment industry. Complainant has published a weekly entertainment magazine under the VARIETY mark since 1905. Complainant owns trademark registrations for its VARIETY mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,350,618 registered July 23, 1985) and the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 1,431,379 registered November 20, 1992).
Respondent, John Wreaves / Wingage Ltd, registered the <varietymagazines.com> and <varietymags.com> domain names on June 30, 2011. The disputed domain names resolve to websites hosting hyperlinks to magazine related websites that offer competing magazine services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it has established rights in its VARIETY mark by registering the mark with the USPTO (e.g., Reg. No. 1,350,618 registered July 23, 1985) and UKIPO (Reg. No. 1,431,379 registered November 20, 1992). Past panels have found national trademark registrations are evidence of rights under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). In accordance with this precedent, the Panel holds that Complainant has established rights in its VARIETY mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <varietymagazines.com> and <varietymags.com> domain names are confusingly similar to Complainant’s VARIETY mark because the disputed domain names are a composite of Complainant’s mark, a descriptive term or abbreviation, and the generic top-level domain (“gTLD”) “.com.” Prior panels have found that the additions of a descriptive term and the gTLD “.com” were insufficient to remove a disputed domain name from the realm of confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <varietymagazines.com> and <varietymags.com> domain names are confusingly similar to Complainant’s VARIETY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <varietymagazines.com> and <varietymags.com> domain names. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <varietymagazines.com> and <varietymags.com> domain names. Complainant claims that Respondent is not a licensee of Complainant and is not authorized to use Complainant’s VARIETY mark. The WHOIS information lists “John Wreaves / Wingage Ltd” as the registrant of the <varietymagazines.com> and <varietymags.com> domain names. Previous panels have determined that a respondent is not commonly known by a disputed domain name if the complainant has not authorized the respondent to use the complainant’s mark and the WHOIS information was not similar to the disputed domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel holds that Respondent is not commonly known by the <varietymagazines.com> and <varietymags.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s <varietymagazines.com> and <varietymags.com> domain names resolve to a website that hosts hyperlinks that resolve to magazine related websites. Complainant provides screen shots of the resolving websites that show Complainant’s allegations to be true. The Panel presumes that Respondent commercially gains from the hyperlinks and that the magazine related websites sell competing magazines. Past panels have found that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the disputed domain name resolves to a website hosting competing hyperlinks. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Based on this precedent, the Panel determines that Respondent is making neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <varietymagazines.com> and <varietymags.com> domain names pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make any arguments of bad faith registration and use under Policy ¶ 4(b)(iii). Past panels have found that a respondent registered and uses a disputed domain name in bad faith under Policy ¶ 4(b)(iii) when the disputed domain name resolves to a website containing competing hyperlinks. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel holds that Respondent registered and uses the <varietymagazines.com> and <varietymags.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent registered and uses the <varietymagazines.com> and <varietymags.com> domain names in bad faith under Policy ¶ 4(b)(iv) because Respondent is attempting to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion. Prior panels have found bad faith registration and use when a respondent hosts competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel concludes that Respondent registered and uses the <varietymagazines.com> and <varietymags.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <varietymagazines.com> and <varietymags.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 20, 2011
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